MAKING COPYRIGHT CONTENT AVAILABLE IN THE
CLOUD VS THE MAKING OF COPIES: REVISITING
OPTUS TV
V AND AEREO
CHERYL FOONG*
ABSTRACT
In the digital environment, the commercialisation of copyright content is
increasingly led by access to content, rather than the provision of copies.
Copyright law nevertheless remains fi xated on copies, or more specifically,
copyright owners’ exclusive reproduction right. This unwavering fixation
on copying blinds us to the potential afforded by the right to make works
available to the public — a broad right introduced in 1996 by the WIPO
Internet Treaties to address the interactive communication channels
afforded by the internet. The default approach in cases involving cloudbased services is to overlook the ‘act’ of making available, and stretch
the reproduction right to encompass the activities of a service provider.
As a result, the scope of the ‘making available’ right remains uncertain
and its potential unrealised. Using prominent Australian and US cases
— NRL v Singtel Optus and ABC v Aereo — this article illustrates the
importance of clearly conceptualising the ‘act’ of making available, which
allows courts to allocate responsibility for primary infringement of the
making available right in a principled manner, without unduly restricting
the development of innovative services in the cloud.
I
INTRODUCTION
In the analogue age, the creation and transfer of copies was a primary source of
income for copyright owners. It is apparent today that digital technologies and
the online markets developing around them are swiftly displacing the traditional
reliance on the distribution of multiple copies of copyright works for income
generation.1 In these online markets, value lies primarily in access to the work, ie
experiencing a transient representation of the work without necessarily acquiring
a tangible copy.2 In this context, the right to make works available to the public
*
LLB (Hons I) LLM (QUT); LLM (Columbia); Lecturer, Curtin Law School.
1
See William A van Caenegem, ‘Copyright, Communication and New Technologies’ (1995) 23 Federal
Law Review 322, 325 (predicting that interactive access to copyright works would be increasingly
common, and that income from reproduction would be ‘partly usurped’).
See Jane C Ginsburg, ‘From Having Copies to Experiencing Works: The Development of an Access
Right in US Copyright Law’ in Hugh Hansen (ed), US Intellectual Property Law and Policy (Edward
Elgar, 2006) 39.
2
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Monash University Law Review (Vol 41, No 3)
will gain value and relevance over and above the reproduction right.3 The making
available right is an exclusive right of authors, performers and phonogram
producers to make their works and other protected material available to the public
through electronic interactive networks such as the internet. It was introduced at
the international level by the World Intellectual Property Organization (WIPO)
Copyright Treaty (‘WCT’) and WIPO Performances and Phonograms Treaty
(‘WPPT’) (collectively known as the ‘‘Internet Treaties’),4 adopted in Geneva on
20 December 1996.5
Twenty years on, the scope of the making available right is still being tested
and its potential unfulfilled despite being a key right in the digital information
age. Cases involving the provision of cloud-based6 Remote Storage Digital Video
Recorder (‘RS-DVR’) services in particular, highlight the law’s persistent fixation
on the making of copies. In these instances, courts have a tendency to use the
reproduction right as a proxy to allocate liability for making copyright works
available to the public.7 In other words, who conducts the act of copying (or on
whose facilities reproduction occurs) is determinative of liability. On the other
hand, where the courts refrain from focusing on reproductions, their interpretation
of the copyright owner’s right to ‘make available’ (as implemented under the
national copyright regime) may hinge on analogies with outdated technologies.8
A ‘guilt-by-resemblance’ approach provides little, if any, guidance as to whether
an act is or is not infringing.9
Under these approaches, the making available right loses relevance as a key
exclusive right of copyright owners in the digital age, independent of the right to
3
4
5
6
7
8
9
Note that under the Copyright Act 1968 (Cth) (‘Copyright Act’), owners of Part III works have the
exclusive right to ‘reproduce the work in a material form’ (see s 31), while owners of Part IV subject
matter generally have the exclusive right to ‘make a copy’ of the subject matter (see ss 85–8). While
legal and terminological distinctions exist between these rights, this article predominantly uses the
terms ‘reproduction right’ as the arguments raised are applicable to both Part III works and Part
IV subject matter. The terms are also used to refer to the corresponding reproduction right in other
jurisdictions. For example, the US Code provides that owners have the exclusive right ‘to reproduce
the copyrighted work in copies or phonorecords’: Copyright Act of 1979, 17 USC § 106 (2012) (‘US
Copyright Act’).
See Mihály Ficsor, The Law of Copyright and the Internet: The 1996 WIPO Treaties, their
Interpretation and Implementation (Oxford University Press, 2002) 414–15.
WCT,
T opened for signature 20 December 1996, 2186 UNTS 121 (entered into force 6 March 2002) art
8; WPPT,
T opened for signature 20 December 1996, 2186 UNTS 203 (entered into force 20 May 2002)
arts 10, 14.
‘Cloud’ computing has been described, from the perspective of the user, as ‘storing and accessing data
and programs over the internet instead of your computer’s hard drive’: Eric Griffith, ‘What Is Cloud
Computing?’, PCMagg (online), 13 March 2013 <http://www.pcmag.com/article2/0,2817,2372163,00.
asp>. For more on ‘the cloud’, see Part II of this article.
See National Rugby League Investments Pty Ltd v Singtel Optus Pty Ltd (2012) 201 FCR 147 (‘Optus’).
See American Broadcasting Companies Inc v Aereo Inc, 134 S Ct 2498 (2014) (‘Aereo
‘
’) (applying the
public performance right, which gives effect to the making available right in the United States).
Ibid 2515–17 (Scalia J).
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
TV and Aereo
585
make copies.10 In addition, these decisions risk broadening the reproduction right
and diminishing the ability of consumers to access cloud storage services.11 At
a key event leading up to the adoption of the WIPO Internet Treaties, Professor
André Lucas explained that the difficulty posed by the online environment is that:
copyright, and more especially the Anglo-American form of copyright,
has evolved around the right of reproduction. How is one therefore to
cater to this new reality? … The truth of the matter, it seems to me, is
that the procedures for the distribution of the work no longer appear to be
essential.12
This truth should be recognised in copyright law. The making available right
need not live in the shadow of the reproduction right or depend on the presence
of copies. We can realise the untapped potential of the making available right,
firstly, by distinguishing a ‘volitional’13 act of making available from an act of
reproduction, and secondly, by recognising the appropriate role of secondary
liability when the defendant is not itself volitionally carrying out the infringing
act. To illustrate the benefits and objectives of making these distinctions, this
article will explain how the Australian Federal Court case of National Rugby
League Investments Pty Ltd v Singtel Optus Pty Ltd (‘Optus’)14 and, to some
extent, the US Supreme Court case of American Broadcasting Companies v Aereo
Inc (‘Aereo
‘
’)15 could have been decided in a clear and principled manner,16 without
unnecessarily impeding the development of consumer storage technologies and
cloud-based services more broadly.
10
11
12
13
14
15
16
Cf the archetypical case where users may access a website and download files directly from the
website, in which case the Internet Treaties successfully fill the gaps of the Berne Convention for the
most part: Berne Convention for the Protection of Literary and Artistic Works, opened for signature
24 July 1971, 1161 UNTS 30 (entered into force 15 December 1972) (‘Berne Convention’). See Jane
C Ginsburg, ‘The (New?) Right of Making Available to the Public’ in David Vaver and Lionel
Bently (eds), Intellectual Property in the New Millennium: Essays in Honour of William R Cornish
(Cambridge University Press, 2004) 234.
This is articulated by Jessica Litman as ‘copy-fetish’, that is ‘the idea that every appearance of any
part of a work anywhere should be deemed a “copy” of it, and that every single copy needs a license
or excuse, whether or not anyone will ever see the copy, whether or not the copy has any independent
economic significance, whether or not the so-called copy is incidental to some other use that is
completely lawful’: Jessica Litman, ‘Fetishizing Copies’ in Ruth Okediji (ed), Copyright in an Age of
Limitations and Exceptions (Cambridge University Press, 2015) (forthcoming).
André Lucas, ‘Summary of the Proceedings of the Symposium’ (Paper presented at the WIPO
Worldwide Symposium on the Future of Copyright and Neighbouring Rights, Le Louvre, Paris, 3
June 1994) 279.
The volition standard is an assessment of the defendant’s causation agency in bringing about the
actual infringing conduct, such that the defendant can be said to have exercised the exclusive rights of
the copyright owner: Religious Technology Center v Netcom On-Line Communication Services Inc,
907 F Supp 1361 (ND Cal, 1995) (‘Netcom’); CoStar Group Inc v LoopNet Inc, 373 F 3d 544 (4th Cir,
2004) (‘CoStar’). The volition test will be discussed in more detail in Part VII of this article.
(2012) 201 FCR 147.
134 S Ct 2498 (2014).
For a broader survey of cases in other jurisdictions on the legality of cloud-based RS-DVR services,
see Rebecca Giblin and Jane C Ginsburg, ‘Asking the Right Questions in Copyright Cases: Lessons
from Aereo and its International Brethren’ (Working Paper No 504, Columbia Law School, 16
December 2014).
586
Monash University Law Review (Vol 41, No 3)
II
THE CLOUD
In light of the exponential development of data processing technologies (including
higher data transfer speeds and data compression which necessitate smaller
bandwidth),17 it is not surprising that ‘cloud computing’ has gained prominence
as a game-changer in IT innovation.18 The term has been used from as early as
1996,19 yet a precise definition of ‘cloud computing’ has proven to be ‘remarkably
elusive’.20 Nevertheless, it is possible to shape a definition using certain core
concepts, upon which there is broad agreement.21 The National Institute of
Standards and Technology, an agency of the US Department of Commerce,
explains that:
Cloud computing is a model that enables ubiquitous, convenient, ondemand network access to a shared pool of configurable computing
resources (e.g. networks, servers, storage, applications, and services)
that can be rapidly provisioned and released with minimal management
effort or service provider interaction. This cloud model is composed of
five essential characteristics, three service models, and four deployment
models.22
The essential characteristics include on-demand self-service by users, broad
network access through standard mechanisms that promote use on platforms such
as mobile phones and tablets, and resource pooling (ie dynamic assignment and
reassignment of physical and virtual resources according to consumer demand).23
The advantages presented by cloud computing should not be understated. A study
conducted by the World Economic Forum in 2011, for example, found that the
flexibility and efficiency gains ‘just [scratch] the surface of cloud’s potential’, and
that cloud computing had ‘the potential to benefit organizations, whole industries,
17
18
19
20
21
22
23
The development and popularity of cloud services can be seen as a culmination of various factors,
an important one being the wide availability of high-speed internet connections: Adam Clark Estes,
‘What Is “the Cloud” — and Where Is It?’ on Gizmodo (29 January 2015) <http://gizmodo.com/whatis-the-cloud-and-where-is-it-1682276210>.
As Google’s Executive Chairman, Eric Schmidt stated, ‘moving to the cloud is not a questionable
proposition — it’s inevitable’: Eric Schmidt, ‘Rebirth of IT’ on Google for Work Blog
g (8 October
2013) <http://googleforwork.blogspot.com.au/2013/10/rebirth-of-it.html>. See also Thor Olavsrud,
‘Microsoft Says Its Future in the Cloud is Bright’ on CIO (9 October 2013) <http://www.cio.com/
article/2381876/enterprise-software/microsoft-says-its-future-in-the-cloud-is-bright.html>.
Antonio Regalado, ‘Who Coined “Cloud Computing”?’ on MIT Technology Review (31 October
2011) <http://www.technologyreview.com/news/425970/who-coined-cloud-computing/>.
Christopher S Yoo, ‘Cloud Computing: Architectural and Policy Implications’ (2011) 38 Review of
Industrial Organization 405, 406.
Ibid.
Peter Mell and Timothy Grance, ‘The NIST Defi nition of Cloud Computing’ (Special Publication No
800-145, National Institute of Standards and Technology, September 2011) 2 <http://csrc.nist.gov/
publications/nistpubs/800-145/SP800-145.pdf>.
Ibid. The three service models are Software as a Service (‘consumer use of the provider’s applications
that run on cloud infrastructure’), Platform as a Service (capability of consumers to ‘deploy onto
the cloud infrastructure consumer-created or acquired applications’) and Infrastructure as a
Service (‘provision of processing, storage, networks and other fundamental computing resources to
consumers’): at 2–3.
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
TV and Aereo
587
and even entire economies’.24 While the efficiency and innovation gains are
palpable, the legalities of cloud services remain complex and unresolved in
certain contexts. This article will consider, in particular, the proper interpretation
of the making available right (or public performance right in the US) and the
reproduction right, when assessing the legality of cloud-based RS-DVRs under
copyright law.
III
THE MAKING AVAILABLE RIGHT
The value of introducing a broad making available right gained traction at
the international level in the late 1980s, as the internet presented itself as a
viable channel for content delivery.25 It had become apparent that new binding
international copyright norms were necessary, as the Berne Convention for the
Protection of Literary and Artistic Works (‘Berne
‘
Convention’) was not adequate
to respond to problems raised by digital technology.26 In 1996, over 130 countries
at the WIPO Diplomatic Conference on Certain Copyright and Related Rights
Questions adopted the Internet Treaties by consensus.27 As part of the WIPO
‘Digital Agenda’, the drafters of the WCT
T and WPPT
T sought to modernise the
Berne Convention, which covered the right of communication to the public
incompletely and imperfectly.28
The basic proposition was that transmissions of works on the internet and in
similar networks should be the object of a copyright owner’s exclusive right
24
25
26
27
28
World Economic Forum and Accenture, Exploring the Future of Cloud Computing: Riding the Next
Wave of Technology-Driven Transformation (2010), 3 <http://www3.weforum.org/docs/WEF_ITTC_
FutureCloudComputing_Report_2010.pdf>.
The concept of making available, in a broad sense, should not be mistaken as a novelty of the internet
age. As Peter Menell’s research into the historical background of the publication right shows, the two
keystone rights of the fi rst US federal Copyright Act of 1790 were the right to print (which would
evolve into the modern right to reproduce a work) and the right to publish. The right to publish of
the eighteenth century came from the Latin root ‘publico’ or ‘publicus’, connoting ‘of the people,
public, open to all’. Therefore, ‘the “right to publish” would have been understood by legislators and
judges in the formative period of copyright law to encompass making a work available to the public,
whether or not copies were actually distributed’: Peter S Menell, ‘In Search of Copyright’s Lost Ark:
Interpreting the Right to Distribute in the Internet Age’ (2012) 59 Journal of the Copyright Society of
the USA 1, 33–5, citing University of Notre Dame, Latin Dictionary and Grammar Aid
d <http://www.
archives.nd.edu/cgi-bin/lookit.pl?latin=publico> (emphasis added).
International Bureau of WIPO, The WIPO Copyright Treaty (WCT) and the WIPO Performances
and Phonograms Treaty (WPPT) <http://www.wipo.int/export/sites/www/copyright/en/activities/
pdf/wct_wppt.pdf>. See also Mihály Ficsor, ‘Towards a Global Solution: The Digital Agenda of the
Berne Protocol and the New Instrument: The Rorschach Test of Digital Transmissions’ in P Bernt
Hugenholtz (ed), The Future of Copyright in a Digital Environment (Kluwer Law International,
1996) 111, 111–21.
Ficsor, The Law of Copyright and the Internet, above n 4, 414–15.
Ginsburg, ‘The (New?) Right of Making Available to the Public’, above n 10. Article 20 of the Berne
Convention provides that Berne Union countries may enter into special agreements to grant authors
more extensive rights than those granted by the Convention. In accordance with that provision, art
1(1) of the WCT
T provides that it is a ‘special agreement within the meaning of Article 20 of the Berne
Convention’. However, as Ginsburg notes, it is not entirely clear whether the making available right
may be considered a substantive enlargement of Berne Convention rights or a mere affirmation of the
existing scope of rights, but prefers to describe it as clarification.
588
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(subject to appropriate exceptions).29 One of the main objectives of a broad
making available right was to cover on-demand transmissions of copyright
works through interactive systems (ie not just ‘push’ technologies but ‘pull’
technologies).30 Therefore, it would be irrelevant whether copies of a work were
made available or whether the work was simply ‘made perceptible’ to users.31 As
explained by WIPO, the concept of ‘making available’:
extends not only to the acts that are carried out by the ‘communicators’
themselves (that is, to the acts as a result of which a work or object of
related right is, in fact, made available to the public and the members of
the public do not have to do more than, for example, switch on equipment
necessary for its reception), but also to the acts which only consist of
making the work accessible to the public, and in the case of which the
members of the public still have to cause the system to make it actually
available to them.32
A key aspect of this explanation is the focus on the effect of the act of making
available — a work being made available, even if the technology requires the
intervention of members of the public. Due to a lack of consensus concerning
the legal characterisation of online interactive transmissions and the rights to
be applied to such transmissions,33 the 1996 Diplomatic Conference agreed on
an ‘umbrella solution’ for the national implementation of this broad right. Under
the ‘umbrella solution’, the act of digital transmission would be described in a
neutral way, free from specific legal characterisation, and the actual choice of the
right or rights to be applied would be left to national legislation.34 In other words,
a member state could introduce an explicit making available right, or provide
effective coverage of the right through a combination of pre-existing rights
(however these rights may take shape).
29
30
31
32
33
34
International Bureau of WIPO, above n 26, 5.
WIPO, ‘Basic Proposal for the Substantive Provisions of the Treaty on Certain Questions Concerning
the Protection of Literary and Artistic Works to be Considered by the Diplomatic Conference’ (Paper
presented at the Diplomatic Conference on Certain Copyright and Neighboring Rights Questions,
Geneva, 2–20 December 1996, WIPO Doc CRNR/DC/4) 44 <http://www.wipo.int/meetings/en/
doc_details.jsp?doc_id=2481>.
WIPO, ‘Summary Minutes Main Committee I’ (Paper presented at the Diplomatic Conference on
Certain Copyright and Neighboring Rights Questions, Geneva, 2–20 December 1996, WIPO Doc
CRNR/DC/102) 40 <http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=2472> (‘Summary
Minutes’). See especially Chairman Jukka Liedes’ opening remarks on art 10 of the WCT.
T
Mihály Ficsor, ‘Guide to the Copyright and Related Rights Treaties Administered by WIPO and
Glossary of Copyright and Related Rights Terms’ (Report, WIPO, 15 February 2004) 208 [CT-8.6]
<http://www.wipo.int/edocs/pubdocs/en/copyright/891/wipo_pub_891.pdf> (emphasis added). See
also Ficsor, The Law of Copyright and the Internet, above n 4, 131:
In an interactive digital network, the role of a ‘receiver’ may be much more active; the
‘transmitter’ may only make the work or object of neighbouring rights accessible for
retrieval by the members of the public who may eventually cause the system to transmit the
work or object of neighbouring rights to them.
The right of distribution (a copy-related right) and the right of communication to the public (a noncopy-related right) were the two basic alternative rights put forward in debates about how interactive
transmission via digital delivery should be given effect: see Ficsor, The Law of Copyright and the
Internet, above n 4, 234.
Ibid 204–6.
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
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589
These extensive deliberations and negotiations culminated in the right of making
available to the public, recognised as a stand-alone right in arts 10 and 14 of the
WPPT,
T 35 and expressed in art 8 of the WCT
T as a ‘sub-right’ to the communication
to the public right. Article 8 provides that:
authors of literary and artistic works shall enjoy the exclusive right of
authorizing any communication to the public of their works, by wire
or wireless means, including the making available to the public of their
works in such a way that members of the public may access these works
from a place and at a time individually chosen by them.
An agreed statement concerning art 8 is that ‘the mere provision of physical
facilities for enabling or making a communication does not in itself amount to
communication within the meaning of this Treaty or the Berne Convention’.36
IV
UNITED STATES AND AUSTRALIAN LAW
A
Australia
To enable Australia’s accession to the WCT
T and WPPT,
T a technology-neutral right
of communication to the public was introduced by the Copyright Amendment
(Digital Agenda) Act 2000 (Cth). ‘Communicate’ is defined to mean ‘make
available online or electronically transmit (whether over a path, or a combination
of paths, provided by a material substance or otherwise) … ’.37 Section 22(6) of the
Copyright Act 1968 (Cth) (‘Copyright Act’) further provides that ‘a communication
… is taken to have been made by the person responsible for determining the
content of the communication.’ As noted in the Explanatory Memorandum to the
bill, the development of new communication technologies had exposed gaps in
the protection afforded by the Copyright Act, and the limited technology-specific
transmission rights were no longer adequate.38 It explained that the amendments
‘would improve the protection of copyright material on the internet and the new
communication networks, including pay TV, and thus facilitate the growth of the
information economy’.39 Therefore, the new right of communication to the public
would provide copyright owners with ‘more effective protection in relation to
35
36
37
38
39
Article 10 of the WPPT
T extends the right of making available to the public to performers, for the
recordings of their performances, and states:
Performers shall enjoy the exclusive right of authorizing the making available to the public
of their performances fi xed in phonograms, by wire or wireless means, in such a way that
members of the public may access them from a place and at a time individually chosen by
them.
Article 14 confers the same right on producers of sound recordings of performances.
WCT
T art 8 (n 8).
Copyright Act s 10(1).
Explanatory Memorandum, Copyright Amendment (Digital Agenda) Bill 2000 4. These were the
wireless broadcasting right and the limited cable diffusion right.
Ibid 8.
590
Monash University Law Review (Vol 41, No 3)
the new and expanding means of commercial exploitation of copyright material,
particularly online delivery’.40
B
United States
The United States implemented other aspects of the WCT
T through the Digital
Millennium Copyright Act of 1998,41 but took advantage of the ‘umbrella solution’
in implementing the right of making available to the public. The US concluded
that explicit references to making available and ‘communication to the public’
were not necessary, as the relevant acts were given effect by the existing scope
of exclusive rights (that is, through the rights of public performance, distribution
and reproduction).42 Section 101, the definitional section of the US Copyright Act
of 1976 (‘US Copyright Act’), provides that the performance or display of a work
‘publicly’ means:
(1)
to perform or display it at a place open to the public or at any place
where a substantial number of persons outside of a normal circle of a
family and its social acquaintances is gathered; or
(2)
to transmit or otherwise communicate a performance or display of
the work to a place specified by clause (1) or to the public, by means
of any device or process, whether the members of the public capable
of receiving the performance or display receive it in the same place
or in separate places and at the same time or at different times.43
In the context of electronic communications, the meaning of sub-s 2 known as
the ‘Transmit Clause’ (as opposed to sub-s 1, the ‘public place’ clause) tends to be
the source of contention.44 It is worth noting that according to the House Report
40
41
42
43
44
Ibid 14–15.
Digital Millennium Copyright Act of 1998, Pub L No 105-304, 112 Stat 2860. These were the provisions
regarding anti-circumvention of technological protection measures (‘TPM’) and protection of
electronic rights management information (‘ERMI’), and ‘safe harbour’ provisions for online service
providers.
US Department of Commerce, ‘Copyright Policy, Creativity, and Innovation in the Digital Economy’
(Green Paper, US Department of Commerce, July 2013) 15 <http://www.uspto.gov/news/publications/
copyrightgreenpaper.pdf>, citing US House of Representatives, Committee on the Judiciary, ‘WIPO
Copyright Treaties Implementation and On-Line Copyright Infringement Liability Limitation’ (HR
Rep No 105-551, 1998) pt 1, 9: ‘The treaties do not require any change in the substance of copyright
rights or exceptions in US law’. Note that the Copyright Office is undertaking a study to assess the
state of US law recognising and protecting the making available right. The study will consider the
feasibility and necessity of amending US law to strengthen and clarify this area: see US Copyright
Office, ‘Study on the Right of Making Available: Comments and Public Roundtable’ (Notice No
2014-04126, Library of Congress, 79 Fed Reg 37, 2014) 10571. According to the US Register of
Copyright and Director of the US Copyright Office, the general consensus of stakeholders is that
there is no need for specific legislative action: see Register’s Perspective on Copyright Review, 114th
Congress, Hearing Before the Committee on the Judiciary House of Representatives (2015) 3–41
(statement of Maria Pallante, Register of Copyrights and Director, US Copyright Office) <http://
judiciary.house.gov/_cache/files/9855f607-e28b-4ff 9-b2f6-7a1106d4ce48/114-22-94408.pdf>.
17 USC § 101 (2012).
Carrie Bodner, ‘Master Copies, Unique Copies and Volitional Conduct: Cartoon Network’s
Implications for the Liability of Cyber Lockers’ (2013) 36 Columbia Journal of Law & the Arts 491,
495.
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
TV and Aereo
591
to the US Copyright Act, a performance is ‘public’ ‘even though the recipients
are not gathered in a single place, and even if there is no proof that any of the
potential recipients were operating the receiving apparatus at the time of the
transmission’.45 The report goes on to explain that ‘[t]he same principles apply
whenever the potential recipients of the transmission represent a limited segment
of the public, such as the occupants of hotel rooms or the subscribers of a cable
television service’.46
This broad conceptualisation of ‘public’ is reflected in the case of Columbia
Pictures Industries Inc v Redd Horne Inc (‘Redd Horne’),47 decided in 1984,
which held that a video rental store’s use of private booths containing individual
televisions to rent tapes to customers was a ‘performance to the public’, because
the same copy of the work was repeatedly performed, even though it was
performed to different members of the public at different times. In Redd Horne, a
customer would select a video cassette and the store employee would play it on a
centrally-located video cassette player and transmit the performance to a monitor
in the room. In Columbia Pictures Industries Inc v Aveco Inc,48 decided in 1986,
the defendant operated a business similar to the defendant in Redd Horne, except
here the video cassette player was located in each room and the customer would
take the cassette into the room and play it themselves. The Court held that, like
the defendant in Redd Horne, Aveco ‘was willing to make a viewing room and
video cassettes available to any member of the public with the inclination to avail
[him/her]self of this service. It is this availability that made [the Redd Horne]
stores public places, not the coincidence that the video cassette players were
situated in the lobby’.49 In other words, it was the public availability of the service
that brought the provisions of the US Copyright Actt into operation.
C
The RS-DVR Cases (in brief)
Fast forward into the new millennium, these legislative provisions and their
interpretations have been tested in disputes regarding the legalities of disruptive
technologies such as RS-DVRs in the cloud. The key appellate decisions from the
US and Australia are Cartoon Network LP v CSC Holdings Inc (‘Cablevision’)50
of the US Court of Appeals for the Second Circuit, Aereo51 of the US Supreme
Court, and Optus52 of the Full Court of the Federal Court of Australia.
45
46
47
48
49
50
51
52
US House of Representatives, Committee on the Judiciary, ‘Copyright Law Revision’ (HR Rep No
94-1476, 1976) 64–5.
Ibid.
749 F 2d 154 (3rdd Cir, 1984).
800 F 2d 59 (3rdd Cir, 1986).
Ibid 63.
536 F 3d 121, 138 (2ndd Cir, 2008).
134 S Ct 2498 (2014).
(2012) 201 FCR 147.
592
1
Monash University Law Review (Vol 41, No 3)
Cablevision
In the Cablevision case, Cablevision subscribers could request that a program be
recorded using the RS-DVR service, and if so, a copy of that program was created
for the customer on a portion of Cablevision’s remote hard drive assigned solely
to that customer. Cablevision was a cable company that held a licence to make the
initial transmission of the copyright owners’ content to its cable subscribers, but it
did not hold licences for the reproduction or subsequent transmission of that same
content via its RS-DVR service. The parties here agreed to drop any claims of fair
use and secondary infringement under contributory liability principles, but relied
solely on the question of direct liability for infringement of the reproduction right
and public performance right.53
The US Court of Appeals for the Second Circuit held that the copies produced
on the RS-DVR service were volitionally ‘made’ by the RS-DVR customer,
and that Cablevision’s contribution to this reproduction by providing the system
did not warrant the imposition of direct liability.54 This finding was made in
accordance with the precedent set by Religious Technology Center v Netcom OnLine Communication Services Inc (‘Netcom
‘
’),55 where the Court held that a key
consideration was the volitional conduct that caused the copy to be made (the
‘volition test’).56
In applying the ‘Transmit Clause’, the Second Circuit did not reach a conclusion
as to whether the subscriber or Cablevision volitionally ‘performed’ the work.57
The Court disposed of the question by finding that the performance was not made
‘to the public’, holding that ‘capable of receiving the performance’ refers not to
the performance of the underlying work being transmitted, but to the particular
transmission at issue.58 Therefore, private transmissions not capable of being
received by the public should not be aggregated as this ‘obviates any possibility
of a purely private transmission’, and would make Cablevision’s liability ‘depend,
in part, on the actions of legal strangers’.59 In other words, ‘unique individual
transmissions would be considered private performances, except where the
transmissions were being generated from a “master copy”’.60 This aspect of the
53
54
55
56
57
58
59
60
Cartoon Network LP v CSC Holdings Inc, 536 F 3d 121, 124 (2ndd Cir, 2008).
Ibid 131–5.
907 F Supp 1361 (ND Cal, 1995).
The volition test will be discussed further in Part VII of this article.
Cartoon Network LP v CSC Holdings Inc, 536 F 3d 121, 134 (2ndd Cir, 2008).
Ibid 135. In other words, it was necessary to examine ‘who precisely is “capable of receiving” a
particular transmission of a performance’ (ie the potential audience of the individual transmission).
Ibid 136.
Ibid 138. The Court carved out an exception to this ‘no-aggregation’ rule where private transmissions
were being generated from the same copy of the work because ‘the use of a unique copy may limit the
potential audience of a transmission’ and noted that ‘in general, any factor that limits the potential
audience of a transmission is relevant’. This interpretation was made in light of the fi nding in Redd
Horne that the performance of tapes in private booths by a video rental store was ‘public’, because
the same copy of the work was repeatedly performed.
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
TV and Aereo
593
ruling, although not expressly rejected, was implicitly overturned by the Supreme
Court in Aereo.61
2
Aereo
The defendant in Aereo sought to capitalise on the Cablevision ruling by building
a ‘copyright-avoiding’ business model.62 Unlike Cablevision, the Aereo system
featured functionalities similar to both a RS-DVR and a streaming service that
captured and relayed free-to-air broadcasts. A subscriber was able to watch a TV
show with a second or two delay on their computer or internet-enabled device
(the ‘watch’ function) or record it for later watching (the ‘record’ function). The
Aereo system featured thousands of dime-sized antennas installed next to each
other to receive broadcast television channels. When a subscriber chose to watch
or record a program, Aereo’s server would assign one of the antennas and a
transcoder (which converts signals into different file formats) to the subscriber. It
then tuned into the program that the user wished to watch or record, transcoded
the data, sent it to an Aereo server and saved it into a hard drive in a directory
reserved for that particular Aereo user. In reliance on the Cablevision precedent
that unique individual transmission not made from a ‘master copy’ would not be
considered public performances, Aereo’s position was that the broadcasts were
received from subscribers’ own ‘individual’ dime-sized antenna and stored in
their ‘personal’ directory on Aereo’s central system.63 In seeking a preliminary
injunction, the plaintiffs in Aereo limited the allegations of infringement to
the public performance right (through the availability of the ‘watch’ function).
The ‘record’ function and the reproduction right were not under consideration.
On appeal from the Second Circuit, the Supreme Court held Aereo liable for
performing the TV programs to the public. In coming to its decision, the Supreme
Court relied heavily on the similarities of Aereo’s functions to that of cable or
community antenna television (‘CATV’) providers. The Court emphasised that
Congress’ primary purpose in amending the US Copyright Actt in 1976 was to
overturn the Supreme Court’s holdings in Fortnightly Corp v United Artists
Television (‘Fortnightly
‘
’)64 and Teleprompter Corp v Columbia Broadcasting
Systems (‘Teleprompter’)65 which held that a CATV provider was more like a
viewer than a broadcaster, and therefore its actions fell outside the scope of the
US Copyright Act. As Aereo’s activities were ‘substantially similar’ to those
of the CATV companies, Aereo was not simply an equipment provider but a
‘performer’.66 Irrespective of the number of discrete communications and the
61
62
63
64
65
66
134 S Ct 2498 (2014).
See Rebecca Giblin and Jane C Ginsburg, ‘On Aereo and “Avoision”’ (2014) 32(4) Copyright
Reporterr 14; Rebecca Giblin and Jane C Ginsburg, ‘We Need to Talk About Aereo: CopyrightAvoiding Business Models, Cloud Storage and a Principled Reading of the “Transmit” Clause’
(Columbia Law and Economics Working Paper No 480, Columbia Law School, 2014) <http://ssrn.
com/abstract=2443595>.
See WNET Thirteen v Aereo Inc, 712 F 3d 676, 682–3 (2ndd Cir, 2013).
392 US 390 (1968).
415 US 394 (1974).
Aereo, 134 S Ct 2498, 2506 (2014).
594
Monash University Law Review (Vol 41, No 3)
technological differences in how the signals were routed to the subscriber, Aereo
was performing them ‘to the public’. Therefore, the findings on both elements
of ‘performance’ and ‘to the public’ were largely based on Aereo’s functional
similarities to cable systems.
3
Optus
In Australia, the case of Optus67 was brought by the National Rugby League (NRL)
and the Australian Football League (AFL) — parties whose lucrative licensing
deals for the live online streaming of their sports events were disrupted by the
availability of the Optus TV Now service. The functionalities of Optus TV Now
were similar to Aereo, allowing both time-shifting and ‘almost live’ viewing to
users of certain devices.68 Optus TV Now, however, utilised a single TV antenna
and a number of digital format receivers (known as DVB-T) for each free to air
channel in every capital city where TV Now was being offered. Upon the request
of a subscriber who clicked ‘record’ on their electronic program guide, Optus
would capture and digitally convert the signal received at the scheduled time
into four specifications designed for playback on different types of subscriber
devices.69 When a subscriber clicked the ‘play’ button for the recorded program,
Optus’s server would look up the recording ID associated with the subscriber’s
ID in their database, and send the compatible version of the recording to a
subscriber’s device.70
At the trial stage of the proceedings, Rares J of the Federal Court of Australia
held that the user of the service was the maker of the copies when he or she
clicked the ‘record’ button on the system, as he or she was solely responsible for
creation of those copies.71 As a result, exercise of the reproduction right by users
was exempt from copyright liability under s 111 of the Copyright Act. Section
111 provides that a person who ‘makes a cinematograph film or sound recording
of a broadcast solely for private and domestic use by watching or listening to the
material broadcast at a time more convenient than the time when the broadcast
is made’ does not infringe copyright.72 Without a primary copyright infringer,
Optus could not be liable under secondary liability principles for ‘authorising’
infringement by its users.73 In considering the communication to the public right
(which encompasses the right to ‘make available’ to the public), Rares J considered
s 22(6) of the Copyright Act, which provides that ‘[f]or the purposes of this Act, a
67
68
69
70
71
72
73
(2012) 201 FCR 147.
Singtel Optus Pty Ltd v National Rugby League Investments Pty Ltd (No 2) (2012) 199 FCR 300, 312
[26]. Note that ‘almost live’ streaming with a two-minute delay was only available to subscribers
using Apple devices.
Ibid [27]–[30].
Ibid 314 [35].
Ibid 322 [63].
Copyright Act s 111.
The basis for authorisation liability principles under Australian law are the provisions in the
Copyright Act which provides that copyright is infringed by a person who does or authorises the
doing of one of the exclusive rights held by the copyright owner: see Copyright Act ss 36(1), 101(1).
Authorisation liability is discussed further in Part VIII of this article.
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
TV and Aereo
595
communication other than a broadcast is taken to have been made by the person
responsible for determining the content of the communication’.74 Rares J was of
the view that s 22(6) and the expression ‘the person responsible’ for determining
the content of the communication was an ‘artificial construct’ to determine
liability for copyright infringement where more than one party is effecting that
communication.75 His Honour held that the Optus TV Now service operated such
that the user who selected the program to be recorded was the person determining
the content to be played back to him or her.76 A user who was communicating the
content to himself or herself was therefore not communicating ‘to the public’.77
The Full Federal Court unanimously reversed Rares J’s decision.78 The case was
decided in the plaintiffs’ favour solely on the basis of the reproduction right. As
this was considered sufficient to resolve the appeal, it was unnecessary to consider
the right to communicate to the public.79 The Court considered that Optus’s role
in the making of a copy (ie capturing the broadcast and then embodying it in a
hard disk) was ‘so pervasive that, even though entirely automated, it cannot be
disregarded’ in identifying who does the copying.80 The Court expressly rejected
the volitional conduct standard from Cablevision, stating that ‘its adoption in
this country would, in our view, require a gloss to be put on the word “make”’.81
As a result, the Court’s preferred view was that both Optus and the subscriber,
acting together, were the makers of the copies, and therefore they were jointly
and severally responsible for the act.82 This finding, in turn, disqualified Optus
from taking advantage of the s 111 time-shifting exception. Optus, a commercial
provider of the TV Now service, was not exempt from infringing copyright
because it was not doing so ‘solely for private and domestic use’.83
D Overlooking the Act of Making Available
Before delving into a more detailed analysis of the making available right in
relation to ‘near to interactive’ services, it is worth pausing to summarise the
basis upon which these cases were decided. In the Optus case, the trial judge’s
finding on the act of making available under the communication to the public
right hinged on his initial finding that the user was the ‘maker’ of the copies
of broadcast content. The Full Federal Court overturned the decision and found
74
75
76
77
78
79
80
81
82
83
Ibid s 22(6).
Singtel Optus Pty Ltd v National Rugby League Investments Pty Ltd (No 2) (2012) 199 FCR 300, 329
[92].
Ibid 328 [90].
Ibid 332 [106].
Optus (2012) 201 FCR 147.
Ibid 152 [7].
Ibid 165 [67].
Ibid 164 [63]. It was not apparent to the Court ‘why a person who designs and operates a wholly
automated copying system ought of course not be treated as a “maker” of an infringing copy where
the system itself is designed so as to respond to a third party command to make the copy’: at 165 [64].
Ibid 167 [77]–[78].
Ibid 168–9 [82]–[87].
596
Monash University Law Review (Vol 41, No 3)
infringement of the reproduction right, but did not address the communication to
the public right.
Although the Second Circuit in Cablevision considered both the reproduction
right and the public performance right, the public performance claim was
dismissed because it was not made ‘to the public’. The conduct that brought about
the performance — the actt of performing — was not addressed. As the Second
Circuit explicitly noted in Cablevision, their conclusion ‘that the customer, not
Cablevision “does” the copying does not dictate a parallel conclusion that the
customer, and not Cablevision, “performs” the copyrighted work. The definitions
that delineate the contours of the reproduction and public performance rights
vary in significant ways.’84 Yet, the Court chooses to circumvent this analysis,
and focus on the public/private nature of the performance.85
The US Supreme Court’s Aereo decision, on the other hand, may be lauded as
one that focuses on the practical outcome and is not distracted by technological
contrivance.86 However, it is difficult to ascertain the principles to emerge from
this case. When is a technology so ‘cable-like’ that it publicly performs?87 The
volition approach of the dissenting judges, although not explicitly rejected, was
simply not mentioned by the majority.88
The approach taken by the Courts in each case is summarised in Table 1 below.
Table 1. Summary of the case outcomes
Reproduction right
Cablevision
84
85
86
87
88

Performance/Communication to
the public right
No volitional conduct by 
defendant

Performance not ‘to the
public’
Volition of performance not
addressed
Cartoon Network LP v CSC Holdings Inc, 536 F 3d 121, 134 (2ndd Cir, 2008).
Ibid 135.
See WNET Thirteen v Aereo Inc, 712 F 3d 676, 697 (2ndd Cir, 2013). Judge Chin in his dissent, described
Aereo as a ‘Rube Goldberg-like contrivance, over-engineered in an attempt to avoid the reach of the
Copyright Act’ and specifically designed to fit the confi nes of the Cablevision ruling.
See Aereo, 134 S Ct 2498, 2516–17 (2014). As Scalia J in his dissent argues:
[T]he Court provides no criteria for determining when its cable-TV-lookalike rule applies
[ … it is] nothing but th’ol’ totality-of-the-circumstances test (which is not a test at all but
merely assertion of an intent to perform test-free, ad hoc, case-by-case evaluation). It will
take years, perhaps decades, to determine which automated systems now in existence are
governed by the traditional volitional-conduct test and which get the Aereo treatment. (And
automated systems now in contemplation will have to take their chances.) The Court vows
that its ruling will not affect cloud-storage providers and cable television systems … but it
cannot deliver on that promise given the imprecision of its result-driven rule.
Note that even though the Supreme Court considered Aereo to be ‘like cable’, Aereo was not able
to acquire a compulsory license for rebroadcasting: see Transcript of Proceedings, American
Broadcasting Companies Inc et al v Aereo Inc (United States District Court for the Southern District
of New York, Judge Nathan, 23 October 2014), applying WPIX Inc v ivi Inc, 691 F 3d 275, 279 (2ndd Cir,
2012)). A similar outcome would be likely in Australia: see Phonographic Performance Company of
Australia Ltd v Commercial Radio Australia Ltd
d (2013) 209 FCR 331.
Aereo, 134 S Ct 2498, 2510 (2014).
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
TV and Aereo
Aereo

Not an issue on appeal
Optus TV

Optus is the ‘maker’of the 
copy

597
Aereo is the functional
equivalent of cable
Not addressed
In short, the Courts did not delve into the question of whether the defendant carried
out the initial act of making available to the public (under the relevant provision
implementing the right). Of course, courts are not obliged to consider all possible
grounds for liability, and need only find infringement of an exclusive right of the
owner. However, as this article will explain, where an assessment of the act of
making available is undertaken by the courts (either expressly or otherwise), the
assessment is inappropriately dictated by the making of copies. In these cases,
the interpretations of the Courts have overlooked the potential of the making
available right, a right proposed specifically to deal with the challenges posed
by digital communications on the internet. This is apparent when we consider
the discussions of the drafters of the Internet Treaties on the making available of
copyright material using ‘near to interactive’ content delivery service — services
which may require some choice on the part of users.
V
THE ‘ACT’ OF MAKING AVAILABLE USING ‘NEAR TO
INTERACTIVE’ SERVICES
Cloud-based RS-DVR systems that capture, store and stream free-to-air television
broadcasts specifically, were not at the forefront of these drafters’ minds when the
WCT
T and WPPT
T were being debated and acceded to. Therefore, the preliminary
discussions leading up to the accession to the Internet Treaties do not, and should
not be expected to, provide a conclusive answer to the issues raised in Aereo and
Optus. Nonetheless, these discussions give us an indication of the drafters’ aims
in introducing a broad making available right. They show that at the international
level, the act of making available was considered broad enough to encompass
technologies which had the effectt of making copyright works available to the
public, even if the interactions of users were necessary to bring about that effect.
A Making Available Using ‘Near to Interactive’ Content
Delivery Services
As the Basic Proposal for Draft Treaty No 2 regarding the rights of performers
and producers of phonograms explains, the ‘expressions “may access” and “from
a place and at a time individually chosen” cover directly all situations that are
598
Monash University Law Review (Vol 41, No 3)
interactive’.89 Although the relationship between art 8 of the WCT and services
somewhat similar to subscription-based services was raised by several delegates
in the 1996 WIPO Diplomatic Conference, this was not clarified.90 The Basic
Proposal for Draft Treaty No 2 (the WPPT) was more explicit, stating:
There are, however, systems and services based on particular technical
arrangements and programming structures which make it possible to
access the fixed performances provided by the service without such access
being fully interactive. Such services are offered on a subscription basis.
From the point of view of the members of the public these services are ‘near
to interactive’. In many cases the only difference between interactive and
‘near to interactive’ is in the time required for access. For both members
of the public and rightholders, the shorter the delay, the closer the effect
of such practices is to those of services that enable immediate access. …
The proposed right of making available of fixed performances in Article
11 is intended to cover both directly interactive ways of making available
and services with similar effects, as described above.91
Therefore, in accordance with the objectives of the drafters, the effect of an act
of making available should be interpreted broadly to cover ‘near to interactive’
content delivery services.
B The Act of Making Available
Our analysis of the scope of the making available right, however, should not end
at its effect. It is still necessary to identify the relevant act of making available,
because copyright law grants owners exclusive rights over specified ‘acts’, not
over ‘uses’ of their works.92 The question is this: at what point does one exercise
the exclusive right of the copyright owner to ‘make available’ to the public?
As the notes to the proposed art 8 presented at the Diplomatic Conference explain,
it was envisaged that:
89
90
91
92
WIPO, ‘Basic Proposal for the Substantive Provisions of the Treaty for the Protection of the Rights
of Performers and Producers of Phonograms to be Considered by the Diplomatic Conference’ (Paper
presented at the Diplomatic Conference on Certain Copyright and Neighboring Rights Questions,
Geneva, 2–20 December 1996, WIPO Doc CRNR/DC/5) 54 <http://www.wipo.int/meetings/en/
doc_details.jsp?doc_id=2483>, cited in Ficsor, The Law of Copyright and the Internet, above n 4, 245
(‘Basic Proposal for Draft Treaty No 2’).
See WIPO, Summary Minutes, above n 31, 43.
WIPO, Basic Proposal for Draft Treaty No 2, above n 89, 54–6 [11.06], [11.08] (emphasis added).
See for example, the wording of s 31 of the Copyright Act, which provides that ‘copyright, in relation
to a work, is the exclusive right … to do all or any of the following acts … ’ Cf Giblin and Ginsburg,
‘Asking the Right Questions’, above n 16, 34. Giblin and Ginsburg argue that:
Given the significant (and increasing) potential for arbitrary outcomes to the ‘who does?’
analysis, we consider that a better approach would centre inquiry on whether, after full
reflection on the contributions of each party, the use should be permitted — instead of
allowing ancillary considerations to determine liability.
However, an approach which emphasises the ‘use’ may perhaps again be too outcome-focused, and
does not assist us in developing our understanding of what ‘acts’ are covered.
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
TV and Aereo
599
What counts is the initial act of making the work available, not the mere
provision of server space, communication connections, or facilities for the
carriage and routing of signals. It is irrelevant whether copies are available
for the user or whether the work is simply made perceptible to, and thus
usable by, the user. … [T]he relevant acts of communication include cases
where members of the public may have access to the works from different
places and at different times. The element of individual choice implies the
interactive nature of the access.93
In other words, the making of a copy or a subsequent dealing with any copy made,
although facilitating the making available of the copyright owner’s content, is
not necessarily the trigger of an exercise of the right to ‘make available’. What
matters is the initial act of making the work available, despite an ‘element of
individual choice’ by users.94
VI
DISTINGUISHING THE MAKING OF COPIES
The making of copies could be part of a process of making content available, but
making a work available to the public does not necessarily require the making of
copies. As Mihály Ficsor, former Deputy Director General of the WIPO,95 notes,
the introduction of the making available right under the ‘umbrella solution’ marked
the first time that the principle of relative freedom of legal characterisation96
crossed the traditional borders between ‘copy-related rights’ and ‘non-copyrelated rights’.97 Copy-related rights cover ‘acts by means of which copies are
made available to the public, typically for “deferred” use, since the act of making
available and the perception’ of that which the work expresses (ie the actual ‘use’)
by members of the public occur at a later time.98 Non-copy-related rights, ‘on the
93
94
95
96
97
98
International Bureau of WIPO, ‘Records of the Diplomatic Conference on Certain Copyright and
Neighboring Rights Questions’ (WIPO Publication No 348 (E), Geneva, December 1999) 204, cited
in Ficsor, The Law of Copyright and the Internet, above n 4, 243 (emphasis added).
See Andrew Christie and Eloise Dias, ‘The New Right of Communication in Australia’ (2005) 27(2)
Sydney Law Review 237, 249 (noting that other types of communication encompassed by art 8 could
occur at a point in time later than that of a making available). See also Roadshow Films Pty Ltd v iiNet
Ltd (2011) 194 FCR 285, where the Full Court of the Federal Court of Australia held that the plaintiff ’s
films were made available to the public online via peer-to-peer file-sharing software BitTorrent each
time the computer (including the peer-to-peer program and the shared file) was connected to the
internet and available to other BitTorrent users (Emmett J at 321 [154], Jagot J at 363–4 [328] and
Nicholas J at 436 [666]).
Ficsor is recognised as having played a decisive role in the preparation, negotiation, completion and
adoption of the WCT
T and the WPPT:
T see Forward by Dr Kamil Idris (then Director General of WIPO)
in Ficsor, The Law of Copyright and the Internet, above n 4, vii–viii.
The ‘principle of relative freedom of legal characterisation’ of acts covered by international copyright
obligations is perhaps best explained using examples. As Ficsor notes, in some countries the right of
public performance may cover public performance, broadcasting and communication to the public,
whereas in other countries the right of communication to the public is a general right covering
all three categories of performance, broadcasting and communication. International copyright
obligations were adhered to under this principle, so long as the minimum level of protection for such
acts concerned were duly respected: Ficsor, The Law of Copyright and the Internet, above n 4, 497–8.
Ibid 498–9 [C8.08].
Ibid 498.
600
Monash University Law Review (Vol 41, No 3)
other hand, cover acts through which works and objects of related rights are made
available for direct … use (perceiving, studying, watching, listening to) by the
members of the public.’99 These include the right of public performance and right
of communication to the public by wire. Ficsor elaborates on this point, noting
that the actual extent of use is not determined at the moment of making available
by the person/entity that carries out the act of making available, but is determined
by the member of the public’s virtual negotiation with the system.100
One of the early cases on the making available right to emerge in Australia,
Universal Music Australia Pty Ltd v Cooper (‘Cooper’),101 shows how the line
between a making available and the making of copies can be hard to draw. In
Cooper,
r record companies brought copyright infringement claims against the
proprietor of a website on which users would post links to MP3 files containing
sound recordings. Tamberlin J of the Federal Court of Australia considered
whether the provision of links to music files stored elsewhere on the internet
constituted a making available of the sound recordings to the public.102 Tamberlin
J explained that the sound recordings had ‘initially been made available to the
public by being placed on the remote websites’, and therefore they could be
accessed via an alternative route by directly accessing the remote websites.103
When one clicked on a link, the MP3 file would be transmitted directly from the
host server to the user’s computer, and as a result, the sound recording was made
available from the host server of the remote website, not Cooper’s website.104
These findings accord with the proposition that the operative act is the initial
act of making available, as discussed in the preparatory documents to the WCT
and WPPT.
T 105 However, in arriving at his conclusion, Tamberlin J nevertheless
takes note of the existence of copies. In support of his decision, he explains that
‘the evidence indicates that no music sound recordings are actually stored on the
Cooper website’,106 and that the MP3 file ‘does not pass through or via or across
the Cooper website’.107 Perhaps these observations were made to highlight the
fact that the initial making available was conducted from the remote website by a
third party (and not by the defendant Cooper).
99
100
101
102
103
104
Ibid.
Ibid 499.
(2005) 150 FCR 1.
Ibid 15–16.
Ibid 16 [64].
Ibid 16–17 [65]. Note that the fi nding on Cooper’s liability for authorising infringement was affirmed
in Cooper v Universal Music Australia Pty Ltd (2006) 156 FCR 380. The fi nding of primary liability
for the ‘making available’ right was not an issue on appeal.
105 See also Ficsor, ‘Svensson and the CJEU’s “New Public” Theory’, below n 186 and accompanying
text. Cf Sam Ricketson and Jane C Ginsburg, International Copyright and Neighbouring Rights:
Berne Convention and Beyond
d (Oxford University Press, 2ndd ed, 2005) vol 1, 748 [12.61]. Ricketson
and Ginsburg consider that linking may be a form of indirect making available, if we consider the
‘place’ in the phrase ‘from a place and at a time individually chosen by [members of the public]’ in
art 8 of the WCT
T and arts 10 and 14 of the WPPT
T to mean the networked ‘place’, such as a website. In
other words, the ‘place’ selected by the user would be the source of the making available.
106 Cooperr (2005) 150 FCR 1, 16 [64].
107 Ibid 16 [65].
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
TV and Aereo
601
Yet, these comments may be misconstrued to mean that the making available
of copyright material requires, as a preliminary step, the making available of
copies. If we take the technologies in Optus and Aereo for example, each of these
services offered to the public the ability to access free-to-air broadcast television
through an online service available at a time and place of their choosing. Copies
of copyright material were not available to users, but the ability to capture the
broadcast signals and to make copies of the programs was available to subscribers
of the service. In other words, the act of making available in each of these cases,
I would argue, occurred before the making of copies.
In proceedings prior to the appeal to the Full Federal Court, Rares J, a single
judge of the Federal Court in Singtel Optus Pty Ltd v National Rugby League
Investments Pty Ltd [No 2],
] 108 considered whether the making available right had
been exercised. Consideration of the making available right was restricted to acts
that occurred post-copying — ie after a copy of the program selected by the
subscriber had been made on the system. Rares J did not consider the initial act
of making broadcast programs available, but considered whether the copies that
were made on the system were being communicated when the user clicked the
‘play’ button.109 Here, the act of making available was tied to the making available
of a copy (which arguably was also an act of making available, though not the
initial act of making available), and because the user was the ‘maker’ of the copy,
the ‘maker’ of the communication was also held to be the user.110
This finding that a user, by choosing what to record through the system, is the
sole maker of the communication (by making available) is at odds with the view
expressed in the Diplomatic Conference that making available would entail
some ‘element of individual choice’ by users.111 Furthermore, it is not in line
with Ficsor’s explanation that the actual extent of use after the making available
could be determined by the member of the public’s ‘virtual negotiation’ with the
system.112 A decision which conflates the right of reproduction and right to make
available to the public by focusing on the making of copies has clear implications
— it brings the right of communication to the public by making available into
conflict with ‘users’ rights to make a copy of certain content for personal timeshifting purposes.113 Time-shifting for personal and domestic use is specifically
exempt from copyright infringement under s 111 of the Copyright Act. Under the
US Copyright Act, the scope of copyright owners’ exclusive rights is tempered by
an open-ended fair use exception.114 In the US, the Supreme Court held in Sony
108
109
110
111
112
113
(2012) 199 FCR 300.
Ibid 327 [86].
Ibid 329–30 [94]–[95].
Records of the Diplomatic Conference, above n 93.
Ficsor, The Law of Copyright and the Internet, above n 4, 498–9 [C8.08].
The conceptualisation of copyright free-use exceptions as user rights is not universally accepted.
Nevertheless, it has been recognised by the Canadian Supreme Court in CCH Canadian Ltd v Law
Society of Upper Canada [2004] 1 SCR 339. See also L Ray Patterson and Stanley W Lindberg, The
Nature of Copyright: A Law of Users’ Rights (University of Georgia Press, 1991); Julie E Cohen,
‘Panel I: Intellectual Property and Public Values — The Place of the User in Copyright Law’ (2005)
74 Fordham Law Review 347.
114 17 USC § 107 (2006).
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Corporation of America v Universal City Studios Inc (‘Betamax
‘
’), that the making
of individual copies of television shows for the purposes of watching at a more
convenient time was fair use, and therefore not an infringement of copyright.115
Rares J’s finding on the act of making available was not addressed by the Full
Federal Court in Optus, because the decision was overturned solely on the basis
of the reproduction right.116 However, Rares J’s approach to the making available
right (an approach put forward by the rights-holders)117 arguably set the baseline
for the Full Federal Court’s decision on the reproduction right. In other words,
the Full Federal Court could be inclined to find that a defendant is the ‘maker’ of
copies and therefore liable for an exercise of the reproduction right, because to
find otherwise would supposedly negate the owners’ right to communicate their
works to the public by making available.
Although such assumptions are not apparent on the face of the judgments, their
potential to influence the analysis should not be underestimated. In Cablevision
for example, the parties had agreed to drop any claims of fair use.118 Nevertheless,
as Professor Jane Ginsburg observes, because the users were engaged in a highertech form of ‘time-shifting’, and under the Betamax case time-shifting was not
infringing, the calculus may have informed the Court’s assessment of ‘who’ made
a copy under the claim of infringement of the reproduction right.119 In short, an
approach that conflates who is the ‘maker’ of a reproduction with who is making
available could skew the analysis of each right and the outcome of a case. This
approach inappropriately reduces the legal question to a binary decision as to
which right should be given primacy: is it the ‘users’ right’ to make copies for
time-shifting, or the owner’s right to make available to the public?
This binary question is a fallacy; courts do not have to make such a choice. The
ability of users or subscribers of a service to make copies of copyright content
for their private and domestic time-shifting purposes on cloud services (under
fair use or under s 111 of the Copyright Act)
t need not be diminished in order to
protect copyright owners’ exclusive right to make available to the public. It was
open to the courts to conclude that the copy was volitionally made by the user,
but the initial making available of the content, on the other hand, was volitionally
conducted by the service provider.
115 464 US 417 (1984). In addition, the manufacturer, Sony, not liable for contributory infringement
because the Betamax VCRs were capable of ‘substantially non-infringing uses’, and in this case the
private, non-commercial time-shifting of television programs satisfied this standard: at 442.
116 (2012) 201 FCR 147, 152 [7].
117 Singtel Optus Pty Ltd v National Rugby League Investments Pty Ltd [No 2] (2012) 199 FCR 300, 327
[86].
118 536 F 3d 121, 124 (2ndd Cir, 2008).
119 Jane C Ginsburg, ‘Recent Developments in US Copyright Law — Part II, Caselaw: Exclusive Rights
on the Ebb?’ (Working Paper No 08152, Columbia Law School, 30 August 2008) 16.
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
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VII
603
A NEW VOLITION (OR CAUSATION) STANDARD FOR THE
MAKING AVAILABLE RIGHT
Before the proliferation of diverse online content-delivery services, distinguishing
the exercise of an owner’s making available right from an act of reproduction
would have been a simpler task. Today, online activities tend to implicate a
number of rights.120 Whether something is ‘like cable’ or ‘like a copy shop’ will be
increasingly difficult to ascertain and court decisions are at risk of morphing into
arbitrary line-drawing exercises.121 Determining who is making a copy and who
is making content available in this context is not an easy task, and this is where
the volition test developed in the United States may provide a useful analytical
framework. Although the Full Federal Court rejected the volition test as a mere
‘gloss’ over the word ‘make’ in relation to the making of copies,122 its utility
beyond the question of ‘who’ does the act of copying should be considered fully.
The origin of the volition test is found in the case of Netcom.123 Deciding in 1995
on the primary liability of an Internet Service Provider (ISP) for the actions of
its customers, the District Court held that ‘[a]lthough copyright is a strict liability
statute, there should still be some element of volition or causation which is
lacking where a defendant’s system is merely used to create a copy by a third
party’.124 The Fourth Circuit applied the Netcom decision in CoStar Group Inc v
LoopNet Inc (‘CoStar’),125 stating that ‘something more must be shown than mere
ownership of a machine used by others to make illegal copies. There must be
actual infringing conduct with a nexus sufficiently close and causal to the illegal
copying that one could conclude that the machine owner himself trespassed on
the exclusive domain of the copyright owner’.126 In applying the volition test, the
120 In some instances, courts have attempted to determine which right is the most economically
significant: see, eg, MyVideo Broadband SRL v CELAS GmbH,
H District Court of Munich, No 7 O
4139/08 (25 June 2009); Entertainment Software Association v Society of Composers, Authors and
Music Publishers of Canada [2012] 2 SCR 231 (the Canadian Supreme Court upheld the distinction
between the rights of reproduction and communication to the public, holding that the internet delivery
of a permanent copy of a video game containing musical works did not amount to a ‘communication’).
For more on the relationship between the rights of making available and reproduction in the EU, see
Sari Depreeuw and Jean-Benoît Hubin, ‘Study on the Making Available Right and its Relationship
with the Reproduction Right in Cross-Border Digital Transmissions’ (Report, European Union, 2014)
<http://ec.europa.eu/internal_market/copyright/docs/studies/141219-study_en.pdf>.
121 See Richard A Posner, ‘Book Review: Reasoning by Analogy’ (2006) 91 Cornell Law Review 761,
771:
To suppose that the cable television case can rationally be decided by determining whether
cable television is more like a homeowner’s putting up an antenna than it is like hiring an
orchestra to perform copyrighted music is absurd. A rational resolution of the issue requires
discerning the purpose of giving the owner of a copyrighted work the exclusive right to
perform it.
On the ‘copy shop’ analogy, see Aereo, 134 S Ct 2498, 2507 (2014) (rejecting the dissent’s reliance on
the analogy at 2514). The majority, however, compares Aereo with a valet parking service: at 2510.
122 Optus (2012) 201 FCR 147, 164–5 [63].
123 907 F Supp 1361 (ND Cal, 1995).
124 Ibid 1370. The Court found that, with regard to material posted by users, an ISP or bulletin board
provider was not directly liable for the automatic reproduction of a copyright work on its facilities.
125 373 F 3d 544 (4th Cir, 2004).
126 Ibid 550.
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Second Circuit in Cablevision noted that ‘the purpose of any causation-based
liability doctrine is to identify the actor (or actors) whose “conduct has been so
significant and important a cause that [he or she] should be legally responsible”’.127
In other words, the volition test may be considered as copyright’s equivalent to
the causation requirement under tort law, and here, the importance of comparing
the cause and effect of the system should not be understated.128 While courts may
be more familiar with applying the volition test to the making of copies,129 the
act of making available is more of a moving target, particularly as technology
develops. In these circumstances, it is important that courts are open to applying
the volition test with some level of flexibility, adapting it to the digital age.130 The
volition test, as stated in Netcom and
d CoStarr, perhaps requires some refinement
before being applied to acts of making available using ‘near to interactive’
services. Before asking who is volitionally carrying out the act however, we need
to identify what this ‘act’ is, and whether that act constitutes an exclusive right of
the copyright owner — ie making available to the public or communication to the
public, or the making of a reproduction.
With the relevant act in mind, the volition test requires us to break the chain
of causation down and to consider the volitional acts leading up to the alleged
infringement with some level of granularity. However, in assessing responsibility
for exercising the right to make available to the public, we are not concerned
with distinctions such as where a copy is stored or whether the performance
or communication is made from a single copy or a multitude of copies. We are
concerned with whether the act falls within the exclusive rights of the copyright
owner.
A The Making Available of Copyright Content over a System
How then should the volition test be applied to the making available right,
particularly where an automated system is involved? The Courts in Optus and
Aereo come close to applying the volition test, taking note of relevant facts
127 536 F 3d 121, 132, quoting W Page Keeton et al (eds), Prosser and Keeton on the Law of Torts (West
Publishing, 5th ed, 1984) 273.
128 Terry Hart criticises the volition test due to the courts’ undue focus on the word ‘volition’ and lack
of attention to the causation element, and calls for use of the term ‘proximate causation’: Terry Hart,
‘Symposium: Series Finale for Aereo, but Will There Be a Spin-Off ?’ on SCOTUSblog (26 June
2014) <http://www.scotusblog.com/2014/06/symposium-series-fi nale-for-aereo-but-will-there-be-aspin-off/>; Terry Hart, ‘Making Copies! Retiring the Volitional Conduct Test in Favor of Proximate
Causation’ on Copyhype (7 April 2014) <http://www.copyhype.com/2014/04/making-copiesretiring-the-volitional-conduct-test-in-favor-of-proximate-causation/>. Note that the plain meaning
of ‘volition’, which according to the Oxford English Dictionary is ‘[t]he action of consciously willing
or resolving; the making of a defi nite choice or decision with regard to a course of action; exercise
of the will’, prima facie does not have a clear causation element: Oxford University Press, volition, n
(2015) Oxford English Dictionary (online) <http://www.oed.com/>.
129 See, eg, Cablevision, 536 F 3d 121, 132 (2ndd Cir, 2008).
130 Cf Ginsburg’s prediction that the volition standard (as applied in Cablevision) ‘could herald
the development of business models designed to elude copyright control over the exploitation of
works, particularly in a technological environment in which pervasive automation is increasingly
foreseeable’: Ginsburg, ‘Exclusive Rights on the Ebb’, above n 119, 15.
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
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605
and applying principles that underpin the concept of volition. In other words,
the Courts’ respective findings could have supported a principled application of
the volition test to the making available right (or, subject to some reservations
explained later in this article, the US public performance right).
1
Making Available through the Optus TV Now Service
The Full Federal Court in Optus dismisses the volition test131 but proceeds to
apply the principles of causation underlying the test, referring to the term
‘causative agency’ when describing Optus’ role in causing a copy to be made
through a complex automated service.132 This resulted in a finding that Optus
was responsible (solely or jointly with the subscriber) for the act of making
the copies.133 At several points in the decision, the Full Federal Court made
observations regarding the system’s design, including for example:
Optus is not merely making available its system to another who uses it to
copy a broadcast. Rather it captures, copies, stores and makes available
for reward, a programme for later viewing by another. … Optus not only
has solicited subscriber utilisation of its Service, it has also designed and
maintained a sophisticated system which can effectuate the making of
recordings wanted for viewing by subscribers.134
These observations support a finding that the system was designed to make the
programs, as selected by the subscribers, available to them online at the time
and place of their choosing. When a subscriber clicked the ‘record’ button on the
TV Now service, the subscriber was causing a copy to be made of the particular
program selected. However, the key function or value of the system was not the
making of copies, but the capture of free-to-air broadcasts and the channeling of
broadcasts to subscribers’ online devices. The copies of the programs, made at
the behest of the subscribers, were merely ancillary to the functions of the system
as a whole. Unfortunately, the Court failed to appreciate this distinction but made
these observations merely to support its finding that Optus was the ‘maker’ of the
copies. As a result, the reproduction right was used as a proxy to find Optus liable
for exercising the right to ‘make available’ to the public.
A finding that Optus, through the TV Now system, was responsible for the
making available of the television programs is open on the language of the
Copyright Act. Section 22(6) of the Act provides that ‘a communication … is
taken to have been made by the person responsible for determining the content
of the communication’.135 The terms ‘the communication’ may seem to refer to
131 (2012) 201 FCR 147, 164–5 [63].
132 Ibid 167 [76]: ‘If one focused not only upon the automated service which is held out as able to produce,
and which actually produces, the copies but also on the causative agency that is responsible for the
copies being made at all, the need for a more complex characterisation is suggested’.
133 Ibid. The Court held that: ‘The subscriber, by selecting the programme to be copied and by confi rming
that it is to be copied, can properly be said to be the person who instigates the copying. Yet it is Optus
which effects it. Without the concerted actions of both there would be no copy made … ’
134 Ibid 166 [68], 167 [75] (citations omitted).
135 Copyright Act s 22(6).
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a particular transmission of a work. However, to ‘communicate’ is defined to
mean ‘make available online or electronically transmit … a work or other subject
matter’136 and therefore s 22(6) could be read, in effect, to say ‘a making available
is taken to have been made by the person responsible for the content of the making
available [or the content being made available]’.
It may not have been possible to pinpoint each individual program that would be
captured by the TV Now system before the user pressed ‘record’, but as explained,
the broad concept of making available does not require that a transmission of a
work actually take place. It merely requires that the work be made accessible, and
there is no requirement that it is actually accessed. Simply put, publicly providing
a system specifically designed to capture copyright protected broadcasts and
making the recordings accessible via the internet through PCs or various other
mobile devices would be an exercise of the making available right. On this broader
reading of s 22(6), it is possible to conclude that Optus was responsible for making
free-to-air broadcast television programs available to the public thought its TV
Now system.
2
Public Performance through the Aereo Service
Similarly, the US Supreme Court in Aereo recognised that ‘one can “transmit”
or “communicate” something through a set of actions’.137 However, instead of
analysing precisely which set of actions volitionally taken by Aereo warranted
copyright liability, the Court simply found Aereo too similar to cable companies.
Although the Court refrains from applying the volition standard, in effect, the
Court’s conclusion is that Aereo (through a set of actions) was volitionally
performing the TV broadcasts to the public. The Court does note the technological
differences between cable systems and Aereo. The television signals sent by cable
‘in a sense, lurked behind the screen, ready to emerge when the subscriber turned
the knob’, while in Aereo’s case the ‘turn of the knob’ involved ‘a click on a
website’ which would activate machinery intercepting and rerouting the signals
over the internet.138 However, the Court simply dismisses these differences as
irrelevant, given Aereo’s similarities with cable.
Before criticising the Supreme Court’s decision further however, it bears repeating
that the United States does not have an explicit right to ‘make available’ to the
public, but relies on the rights of reproduction, distribution and public performance
to give effect to the relevant provisions of the WCT
T and WPPT
T under the ‘umbrella
solution’.139 The Transmit Clause in particular,140 provides that to perform a work
136
137
138
139
140
Copyright Act s 10(1).
134 S Ct 2498, 2509 (2014) (emphasis in original).
Ibid 2507.
See 17 USC § 106.
Note that the distribution right (17 USC § 106(3)) may encompass mere offers to make works available
for download (a concept again tied to the transfer of copies). However, lower courts are divided on
the issue, which has not been conclusively decided in the US: Jane C Ginsburg, ‘Letter from the US:
Exclusive Rights, Exceptions, and Uncertain Compliance with International Norms: Part II (Fair
Use)’ (Working Paper No 503, Columbia Law School, 16 December 2014) 5.
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
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publicly means ‘to transmit or otherwise communicate … by means of any device
or process’ to the public.141 The definition does go on to say that a performance
may be ‘to the public’ ‘whether the members of the public capable of receiving the
performance or display receive it in the same place or in separate places and at the
same time or at different times’.142 However, ‘capable’ in the definition appears to
refer to the question of whether it is ‘to the public’.143 Taking this literal reading144
of the Transmit Clause, one would conclude that a performance does not occur
just because the public is capable of receiving a work through the system; an
actual performance has to occur. On the other hand, it is arguable that a purposive
reading145 of the Transmit Clause (with the objective of giving effect to art 8 of
the WCT
T in mind) should give way to a broader interpretation of a transmission or
communication. This broader interpretation would take into account the capacity
of members of the public to receive the transmission or communication.
Despite the lack of an express right to ‘make available’ to the public in the
legislation, the US Supreme Court appears to equate the mere offering of the
service to an infringement of the public performance right.146 At the outset of the
majority opinion, Breyer J states: ‘We must decide whether respondent Aereo,
Inc., infringes this exclusive right by selling its subscribers a technologically
complex service that allows them to watch television programs over the internet
at about the same time as the programs are broadcast over the air. We conclude
that it does’.147 Here, the Court assumes that the mere ‘selling’ of the service that
‘allows’ the public to view the programs would trigger an infringement of the
141 17 USC § 101.
142 17 USC § 101 states:
To perform or display a work ‘publicly’ means—
(2)
to transmit or otherwise communicate a performance or display of the work to a
place specified by clause (1) or to the public, by means of any device or process,
whether the members of the public capable of receiving the performance or
display receive it in the same place or in separate places and at the same time or
at different times.
143 Note that the ‘to the public’ requirement is discussed more fully below in Part IX of this article.
144 A literal approach to statutory interpretation is one which accepts that the words of the statute, if
precise and unambiguous, ‘best declare the intention of the lawgiver’ and should be understood in
their ‘natural and ordinary sense’: Sussex Peerage Case (1844) 8 ER 1034, 1057. See also People
ex rel Wood v Sands, 102 Cal 12, 36 Pac 404 (1984). For a critical discussion of literal meaning in
legal interpretation, see Brian Flanagan, ‘Revisiting the Contribution of Literal Meaning to Legal
Meaning’ (2010) 30 Oxford Journal of Legal Studies 255.
145 A purposive approach to statutory interpretation is one which takes into account the ‘mischief and
defect’ which Parliament sought to remedy by introducing the statute: Heydon’s Case (1584) 76 ER
637, 638. See also United States v Monia, 317 US 424, 432 (1943), where Frankfurter J stated:
A statute, like other living organisms, derives significance and sustenance from its
environment, from which it cannot be severed without being mutilated. … The meaning
of such a statute cannot be gained by confi ning inquiry within its four corners. Only the
historic process of which such legislation is an incomplete fragment — that to which it gave
rise as well as that which gave rise to it — can yield its true meaning.
See generally Richard A Posner, ‘Legislation and Its Interpretation: A Primer’ (1989) 68 Nebraska
Law Review 431, 441 ff; Claude T Coffman, ‘Essay on Statutory Interpretation’ (1979) 9 Memphis
State University Law Review 57.
146 Ginsburg, ‘Letter from the US’, above n 140.
147 Aereo, 134 S Ct 2498, 2503 (2014).
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public performance right, without actual transmissions.148 The Court raises the
public availability of Aereo’s service in order to find it substantially similar to
cable systems, and it is easy to criticise this decision as being outcome-focused
and lacking clarity. However, the Transmit Clause, as drafted, does not support
the more precise and structured analysis proposed here. The Supreme Court did
not have the opportunity to explicitly consider the volitional acts taken by Aereo
to make the copyright content available to the public. Therefore, as Ginsburg
notes, the Aereo decision narrows the gap between US law and international
norms, but leaves questions unanswered.149
B
Other ‘Content Neutral’ Cloud-Based Storage Lockers
A concern voiced in commentary and criticisms against the US Supreme Court’s
Aereo decision is that it is unduly broad, and will negatively impact cloud-based
services.150 The Court itself, particularly in oral arguments, showed an interest
in how its decision might affect ‘the cloud’.151 In its written opinion, the Supreme
Court states it does not believe that this ‘limited holding’ would have the effect
of discouraging the emergence of different kinds of technologies, noting that it
has ‘not considered whether the public performance right is infringed when the
user of a service pays primarily for something other than the transmission of
copyrighted works, such as the remote storage of content’.152 The basis for this
belief is that the performance is not ‘to the public’.153
A preliminary question that should be asked, however, is whether copyright
content is being ‘made available’ at all (in volitionally exercising the public
performance or communication right). The user who stores and makes electronic
files accessible on a content neutral cloud-based storage locker would be
volitionally effecting a transmission or the making available of a work. The ‘act’
of making available is carried out by the user who has stored the content on the
cloud system, because the system does not make any content available to the user,
it is simply making an online storage space available.
Despite reservations about the volition test, Giblin and Ginsburg argue that a key
factor to consider is what the members of the public are paying for in accessing
148 Ginsburg, ‘Letter from the US’, above n 140.
149 Ibid.
150 See, eg, Matthew Schruers, ‘Symposium: Aereo Copyright Decision Creates Uncertainty for the
Cloud’ on SCOTUSblog (26 June 2014) <http://www.scotusblog.com/2014/06/symposium-aereocopyright-decision-creates-uncertainty-for-the-cloud/>.
151 Transcript of Proceedings, Aereo (Supreme Court of the United States, 13461, Roberts CJ, Scalia,
Kennedy, Thomas, Ginsburg, Breyer, Alito, Sotomayor and Kagan JJ, 22 April 2014). See page 15, for
example, where Breyer J asks how the parameters of the public performance right should be worded
in this case, ‘because we have to write words, are we somehow catching other things that really will
change life and shouldn’t, such as the cloud?’ Note that the word ‘cloud’ makes an appearance 38
times in the court transcript.
152 Aereo, 134 S Ct 2498, 2510 (2014).
153 This is discussed in greater detail in Part IX of this article.
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
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the service.154 One may ask whether the service provider is making copyrightprotected material available, or just providing access to ‘dumb pipes’ indifferent
as to the content being made available for transmission or storage.155 While a
subscriber would, in the case of both Aereo and Optus, be selecting the content
to be recorded and streamed to them, the pool of content that can be selected for
recording at any given time is already dictated by the system which captures the
signals, and how it is designed. In contrast, with storage lockers such as Dropbox,
Giblin and Ginsburg argue that ‘the service for which the members of the public
are paying is not the opportunity to receive transmissions of performances of
particular works offered by the service, but rather to store whatever content the
users post — whatever its source — and make it accessible remotely’.156 Therefore,
according to Giblin and Ginsburg, it is ‘the content neutrality [of a service] that
justifies a conclusion that the service is not publicly performing’.157
Note however, that ‘content neutrality’ is again used to determine whether
the performance is ‘to the public’. Yet, it is not entirely clear why the content
neutrality of a system would justify a finding that a transmission or a making
available is private; the relationship between ‘content neutrality’ and the ‘public’
nature of the service is not apparent. The content neutrality of a system would,
on the other hand, clearly support a finding that the actt of making available is not
carried out. In other words, this factor would show that the service provider is
merely making storage space available for whatever users wish to store online; it
is not making copyright content available to its users.
VIII SECONDARY LIABILITY
The assessment above, however, does not mean that the providers of cloud storage
systems that facilitate the reproduction and making available of infringing
154 Rebecca Giblin and Jane C Ginsburg, ‘We (Still) Need to Talk About Aereo: New Controversies and
Unresolved Questions After the Supreme Court’s Decision’ (2015) 38 Columbia Journal of Law &
the Arts 109, 155:
Whether the transmission is ‘to the public’ should be assessed by reference to what kind
of service the public is paying for: streaming of copyrighted content on demand on the
one hand, or access to ‘my stuff ’ on the other, when ‘my stuff ’ includes ‘my’ previouslyacquired lawfully-made copy or unrestricted right of access to the works.
And at 154:
If the service is proposing the content (including content originally proposed by the primary
transmission service whose content the defendant service is retransmitting), then the (re)
transmitter knows what it is offering, even though it may not know which particular works
the user will select from among the offerings. To the extent these services are instead
merely transmitting or allowing users to access third party content that the services are
not proposing, they might be deemed mere equipment providers … But to require that
each transmission manifest specific intent to deliver particular content simply invites
technological workarounds to limit human intervention to the fullest extent possible.
155 Scalia J in dissent argues that although cable systems started out as ‘dumb pipes that routed signals
from point A to point B’, by the time of the Teleprompter decision, cable companies were performing
‘the same functions as broadcasters by deliberately selecting and importing distant signals,
originating programs and selling commercials’: Aereo, 134 S Ct 2498, 2515 (2014).
156 Giblin and Ginsburg, ‘We (Still) Need to Talk About Aereo’, above n 154, 124.
157 Ibid 124 n 102 (emphasis added).
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copyright material can escape liability. In these circumstances, principles of
secondary liability would come into play. Under US copyright law, a defendant
who is not directly infringing copyright may nevertheless be secondarily liable
for the actions of others under the principles of contributory liability or vicarious
liability developed by the courts.158 Contributory liability has its origins in tort
law and provides that ‘one who, with knowledge of the infringing activity,
induces, causes or materially contributes to the infringing conduct of another,
may be held liable as a “contributory” infringer’.159 Vicarious liability, on the
other hand, developed from agency principles and provides that a defendant who
has the right and ability to supervise infringing activity and has an obvious and
direct financial interest in the infringing activity is subject to liability.160
In Australia, principles of authorisation liability stem from provisions in the
Copyright Act which provide that copyright is infringed by a person who does or
authorises the doing of one of the exclusive rights held by the copyright owner.161
To ‘authorise’ has been interpreted by the courts to mean ‘sanction, approve,
[or] countenance’,162 and the factors taken into account by the courts in assessing
authorisation liability (including the level of control held by the defendant and
reasonable steps that could have been taken) have since been codified in the
Copyright Act.163 Although expressed differently across jurisdictions, in general,
these secondary liability principles entail a multifactorial assessment of whether
there is some level of knowledge, control and/or financial interest on the part of
the defendant that would warrant responsibility (ie copyright liability) for the
infringing acts of other parties, where the defendant has not itself engaged in the
infringing acts.164
In his Aereo dissent, Scalia J of the US Supreme Court appears to take a more
principled approach, applying the volition standard to the public performance right
158 See Betamax, 464 US 417, 435 (1984).
159 Gershwin Publishing Corp v Columbia Artists Management Inc, 443 F 2d 1159, 1162 (2ndd Cir, 1971).
On ‘material contribution’, see Perfect 10 Inc v Visa International Service Association, 494 F 3d
788 (9th Cir, 2007), where the Court held that the mere processing of payments made to infringing
websites by Visa and Mastercard, and the collection of fees for such services, could not be said to
materially contribute to infringement. Infringement requires reproduction, alteration, display and
distribution of the plaintiff ’s images, and here it was money (not infringing material) which passed
through the defendant’s networks.
160 Shapiro, Bernstein and Co v H L Green Co Inc, 316 F 2d 304 (2ndd Cir, 1963).
161 Copyright Act ss 36(1), 101(1).
162 University of New South Wales v Moorhouse (1975) 133 CLR 1, 20.
163 Copyright Act ss 36(1A), 101(1A). Section 101 provides:
(1A) In determining, for the purposes of subsection (1), whether or not a person
has authorised the doing in Australia of any act comprised in a copyright subsisting by
virtue of this Part without the licence of the owner of the copyright, the matters that
must be taken into account include the following:
(a)
the extent (if any) of the person’s power to prevent the doing of the act concerned;
(b) the nature of any relationship existing between the person and the person who
did the act concerned;
(c)
whether the person took any other reasonable steps to prevent or avoid the doing
of the act, including whether the person complied with any relevant industry
codes of practice.
164 See, eg, Metro-Goldwyn-Mayer Studios Inc v Grokster Ltd, 545 US 913 (2005); Roadshow Films Pty
Ltd v iiNet Ltd
d (2012) 248 CLR 42.
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
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and considering the importance of maintaining a distinction between primary
and secondary liability.165 The aim, Scalia J notes, is not to excuse the defendant
from accountability, ‘but to channel the claims against them into the correct
analytical track’.166 Scalia J does not come to a conclusion on the application of
contributory liability principles in Aereo, but notes that if secondary liability for
public performance and reproduction and primary liability for reproduction is
not found, then ‘what we have before us must be considered a “loophole” in the
law’.167 He continues that ‘[i]t is not the role of this Court to identify and plug
loopholes. It is the role of good lawyers to identify and exploit them, and the role
of Congress to eliminate them if it wishes’.168
A tentative characterisation of Aereo’s conduct as falling into a legal ‘loophole’,
however, assumes that a finding of non-infringement regarding the reproduction
right would tend to follow a non-infringement finding on the public performance
right. As this article has argued, this is not necessarily the case. Primary and
secondary liability for each exclusive right, and the acts which allegedly fall
within those rights, should be assessed independently.
IX
‘THE PUBLIC’ AS A LIMITING PRINCIPLE
The volition test has been criticised because the question of ‘who does the act?’
may be easily engineered to turn on arbitrary findings.169 This criticism of the test
(as applied in Cablevision) is valid only if the principles continue to develop in
a way which fails to appreciate what it means to ‘make available’ to the public.
As this article has shown, the volition test is capable of operating as a sensible
limiting principle on the making available right.
Before concluding, it is worth exploring the other limiting principles that have
been applied or proposed by the courts, including the Court of Justice of the
European Union (CJEU), which often hinge on a determination of whether the
communication or transmission is private or public. The argument here is not that
the public/private distinction is irrelevant. However, the public/private distinction
tends to overtake the entire analysis of whether the right of making available to
the public has been exercised, when it simply ought to be a partt of the analysis.170
165 See Aereo, 134 S Ct 2498, 2512 (2014). Scalia J argues that ‘[t]he distinction between direct and
secondary liability would collapse if there were not a clear rule for determining whether the defendant
committed the infringing act’, and that the ‘volitional-conduct requirement supplies that rule’: at
2514.
166 Ibid.
167 Ibid 2517.
168 Ibid.
169 Giblin and Ginsburg, ‘We (Still) Need to Talk About Aereo’, above n 154, 144–5.
170 Note that in the absence of clear guidelines in the Berne Convention and Internet Treaties, ‘the
precise demarcation between “public” and “private” remains a matter for determination by national
legislation, subject to the implied qualification that this line should not be set in such a way as to
prejudice’ the author’s public performance or communication to the public rights: Ricketson and
Ginsburg, above n 105, 705.
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A
Australia and the EU: ‘Copyright Owners’ Public’ or
‘New Public’
The making available right has been harmonised throughout the European Union
(EU) under the Information Society Directive of 2001.171 Article 3(1) implements
terms identical to art 8 of the WCT,
T and requires member states to protect the right
of communication to the public, ‘including the making available to the public of
their works in such a way that members of the public may access them from a
place and at a time individually chosen by them.’
In the case of Nils Svensson v Retriever Sverige AB (‘Svensson’),172 which
was initiated in Sweden but referred to the CJEU for a preliminary ruling,173
journalists brought an action against the Retriever, a personalised information
aggregator that would search the internet through various search engines and
create a list of links for the customer. The plaintiff journalists, whose articles had
been published on major Swedish news sites that were openly accessible to the
public, alleged that the Retriever was infringing their right of communication to
the public by making the works available. The CJEU applied the two cumulative
criteria: (1) an ‘act of communication’ of a work; and (2) the communication of
that work to a ‘public’.174 In terms of the first criteria, an ‘act of communication’,
the CJEU held that ‘this must be construed broadly’ in order to ensure ‘a high
level of protection for copyright holders.’175 It held that here, ‘the provision, on
a website, of clickable links to protected works published without any access
restrictions on another site, affords users of the first site direct access to those
works’ and was therefore an ‘act of communication’.176 However, the CJEU held
that the defendant’s actions did not satisfy the second criteria, ie the provision of
online access through a link was not a communication ‘to the public’.
In this instance, the link merely takes one to the online location of the copyright
work, which is openly accessible to the public. A conclusion that the provision
of a publicly accessible link is a ‘communication’ of a copyright work, but the
communication is not ‘to the public’, prima facie, seems counterintuitive. However,
the criteria applied by the court should be understood as a three, not two, step test.
In an intermediate step, one must determine whether the relevant communication
at issue uses the same technical means as the initial communication. Where
the communication uses the same technical means (e.g. in Svensson, where the
171 Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the
Harmonisation of Certain Aspects of Copyright and Related Rights in the Information Society [2001]
OJ L 167/10, art 3.
172 Nils Svensson, Sten Sjögren, Madelaine Sahlman, Pia Gadd v Retriever Sverige AB (Court of Justice
of the European Communities, C-466/12, 13 February 2014) (‘Svensson’).
173 Under art 267 of the Treaty on the Functioning of the European Union, opened for signature 13
December 2007, [2012] OJ C 326/49 (entered into force 1 December 2009) (‘TFEU’), the CJEU has
jurisdiction to issue preliminary rulings on the interpretation of EU treaties upon request by courts
or tribunals of member states.
174 Svensson (Court of Justice of the European Communities, C-466/12, 13 February 2014) [16].
175 Ibid [17].
176 Ibid [18]–[20].
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content was accessed through the internet), it must be directed to a ‘new public’.177
A new public is ‘a public that was not taken into account by the copyright holders
when they authorised the initial communication to the public’.178 In Svensson, the
links were not directed to a new public, because the press articles were already
freely available to the public on the original website. In contrast, the test led
to a different outcome in ITV Broadcasting Ltd v TVCatchup Ltd.179 This CJEU
case involved an internet service that had functions similar to Optus TV Now.
In this instance, because TVCatchup provided subscribers with access through a
technical means different from the initial communication, the communication did
not have to be directed to a ‘new public’.
The European concept of a ‘new public’ shares similarities with the concept of the
‘copyright owner’s public’ in Australia. The High Court of Australia in Telstra
Corporation Ltd v Australian Performing Right Association Ltd,180 applying the
pre-Digital Agenda broadcast and diffusion rights, held that playing music-onhold through the telephone handsets of individuals was a transmission ‘to the
public’.181 In this case, the High Court considered the cumulative effect of one-toone communications through telephones. In response to the defendant’s contention
that these were private communications, the Court held that the relevant question
is: ‘Is the audience one which the owner of the copyright could fairly consider a
part of his [or her] public?’182
The concept of ‘copyright owner’s public’ (or ‘new public’ in the EU) is susceptible
to circular reasoning, and arguably provides no meaningful definition except to say
that a communication or transmission to that public is within the owner’s exclusive
right.183 Australian courts have attempted to refine the concept by emphasising
that it has to be fairly considered a part of the copyright owner’s public, by taking
into account the character of the audience and any financial damage the copyright
owner would suffer.184 However, the application of this concept tends to highlight
the commercial nature (if any) of the defendant’s operations. It is unclear how
this ‘commercial use’ consideration fits into the assessment as a clear limiting
principle; commercial use is not an express requirement for the exercise of a
177 Note that this ‘new public’ theory was fi rst developed in Sociedad General de Autores y Editores de
España (SGAE) v Rafael Hoteles SA (C-306/05) [2006] ECR I-11519 (‘SGAE’).
178 Svensson (Court of Justice of the European Communities, C-466/12, 13 February 2014) [24].
179 (Court of Justice of the European Communities, C-607/11, 7 March 2013).
180 (1997) 191 CLR 140.
181 See Explanatory Memorandum, Copyright Amendment (Digital Agenda) Bill 1999 (Cth) 32 [50]:
The new right of communication to the public encompasses the making available of
copyright material on-line, so as to provide protection to copyright material made available
through on-demand, interactive transmissions. An example of the exercise of this right
would be the uploading of copyright material onto a server which was connected to the
Internet.
182 Telstra Corporation Ltd v Australian Performing Right Association Ltd (1997) 191 CLR 140, 155–6.
183 Kimberlee Weatherall, ‘An End to Private Communications in Copyright? The Expansion of Rights
to Communicate Works to the Public: Part 2’ (1999) 21 European Intellectual Property Review 398,
402.
184 Ibid, citing, eg, Ernest Turner Electrical Instruments Ltd v Performing Right Society Ltd
d [1943] Ch
167.
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copyright owner’s exclusive rights.185 Furthermore, the public/private distinction
under EU jurisprudence carries an additional layer of complexity because one
must question whether the defendant is using the same or different technical
means as the initial communication, before asking whether the communication is
‘to the public’. The result is unprincipled and convoluted decision-making by the
courts based on seemingly arbitrary factors, without a clear explanation of why
the defendant’s particular acts should be considered an exercise of the copyright
owner’s exclusive rights.186
B US: ‘Owner’ or ‘Possessor’
The US Supreme Court, in what appears to be an attempt to shield cloud lockers
like Dropbox from their decision (a concern aired at the hearing),187 explains
that subscribers who ‘receive performances in their capacities as “owners” or
“possessors” of the underlying works’ would not be performing to the public
due to their ‘relationship to the underlying work’.188 The Court elaborates on this
point, using examples:
When, for example, a valet parking attendant returns cars to their drivers,
we would not say that the parking service provides cars ‘to the public.’ We
would say that it provides the cars to their owners. We would say that a car
dealership, on the other hand, does provide cars to the public, for it sells cars
to individuals who lack a pre-existing relationship to the cars. Similarly,
an entity that transmits a performance to individuals in their capacities as
owners or possessors does not perform to ‘the public,’ whereas an entity
like Aereo that transmits to large numbers of paying subscribers who lack
any prior relationship to the works does so perform.189
Copyright is a form of intangible personal property, with ‘property’ referring not
to a particular object but to the relationship between a person and a copyright
185 Cf Copyright Convergence Group, ‘Highways to Change: Copyright in the New Communications
Environment’ (Report, August 1994) 19, 29 (‘[The CCG] recommends that it [sic] provision
be inserted into the Act which deems transmissions of copyright material which are made for a
commercial purpose to be transmissions to the public.’)
186 Note that Mihály Ficsor is highly critical of the ‘new public’ theory emerging from SGAE and as
applied in Svensson, describing it as erroneous and ‘in conflict with the Berne Convention (and
equally with the TRIPS Agreementt and the WCT)’, as ‘it is an error to speak about communication to
a new public when the right is about a new act of communication to the public’ (emphasis in original):
Mihály Ficsor, ‘Svensson and the CJEU’s “New Public” Theory: What the EU May Learn from the
US to Avoid Judicial Lapses’ (Paper presented at the Intellectual Property and Policy Conference,
Fordham Intellectual Property Law Institute, Cambridge University, 8 April 2015) <http://
fordhamipconference.com/wp-content/uploads/2015/04/Update-Ficsor-Mihaly-3B-CopyrightSession-3B_Ficsor_Svensson_from_new-angles.pdf>. See also Mihály J Ficsor, ‘Svensson:
Honest Attempt at Establishing Due Balance Concerning the Use of Hyperlinks — Spoiled by the
Erroneous “New Public” Theory’ on Mihály J Ficsor, Copyright See-Saw (5 May 2014) <http://www.
copyrightseesaw.net/archive/?sw_10_item=68>.
187 Transcript of Proceedings, Aereo (Supreme Court of the United States, 13461, Roberts CJ, Scalia,
Kennedy, Thomas, Ginsburg, Breyer, Alito, Sotomayor and Kagan JJ, 22 April 2014).
188 Aereo, 134 S Ct 2498, 2502, 2510 (2014).
189 Ibid 2510. See also ibid 2502 (emphasis added).
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work.190 Using terms such as ‘owns’ or ‘possesses’ to refer to a digital information
product does not clarify what rights attach to the intellectual property. The reality,
as Giblin and Ginsburg observe, is that ‘[w]hat makes the possession “mine”
may result from a license agreement, or from a fair or tolerated use, such as
format-shifting a hardcopy CD to a digital file’.191 The rights that you have to files
placed in Dropbox or music lockers depend on the property rights and express or
implied licence rights attached to the works.192 In other words, the court treated
the subscriber’s entitlement of access as a possessory relationship.193 By glossing
over an assessment of what rights a user has in relation to the copyright work,
the Supreme Court’s cryptic statement appears to have no purpose other than to
quell its concern that the decision will have a broader effect on new technologies,
particularly remote cloud services.194
In conclusion, the public/private distinction is relevant to the final conclusion and
outcome of a case, but making it the only limiting factor places too much pressure
on the requirement, particularly as advances in communication technology cause
the line between what is public and private to blur.195 Therefore, courts should be
more cautious about taking an over-broad approach to whether copyright works
have been ‘made available’ or transmitted. Before asking ‘who’ is doing the act, it
is first necessary to understand what ‘the act’ is and how it may cause copyright
content to be ‘made available’ to the public.
X CONCLUSION
The drafters of the WCT
T and WPPT
T had a broad vision as to what they intended
to achieve by introducing the making available right, but in the course of national
implementation, it seems that their concept of making available has been lost.
This is evident as courts struggle to apply the concept to cloud-based services
190 Anne Fitzgerald and Brian Fitzgerald, Intellectual Property: In Principle (Lawbook, 2004) 12.
191 Giblin and Ginsburg, ‘We (Still) Need to Talk About Aereo’, above n 154, 155.
192 It is interesting to note that although the concept of ‘digital fi rst sale’ has not fared well in the courts
(see, eg, Capitol Records LLC v ReDigi Inc, 934 F Supp 2d 640 (SD NY, 2013)), the Supreme Court
seems to be introducing an analogous concept here of the rights of users to make use of copies of
works that they have purchased and which they are ‘owners’ or ‘possessors’ of. Nevertheless, it is
unlikely that the fi rst sale doctrine was contemplated by the courts in making this statement.
193 Ginsburg, ‘Letter from the US’, above n 140.
194 See Aereo, 134 S Ct 2498, 2510–11 (2014):
We agree that Congress, while intending the Transmit Clause to apply broadly to cable
companies and their equivalents, did not intend to discourage or to control the emergence
or use of different kinds of technologies. But we do not believe that our limited holding
today will have that effect. … We have said that [the public] does not extend to those who
act as owners or possessors of the relevant product. And we have not considered whether
the public performance right is infringed when the user of a service pays primarily for
something other than the transmission of copyrighted works, such as the remote storage of
content.
195 See Copyright Convergence Group, above n 185, 18 (‘New services which will be available in the near
future, such as “on-demand” services, will mean that the distinction between the concepts of “public”
on one hand and “domestic” or “private” on the other will become blurred. … A comprehensive
defi nition of the public remains elusive.’)
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such as RS-DVRs, confusing the act of making available to the public with
the making of copies even though the use of copies is not a prerequisite to an
exercise of the making available right. Courts and litigants have taken the act
of making available for granted and chosen to rely on the ‘public’ aspect of a
communication or a performance as a limiting principle. As this article has
shown, this approach is undesirable as it puts undue pressure on the public/
private distinction of electronic communications, a line which grows increasingly
tenuous as internet technologies advance at a rapid rate. By conflating the exercise
of two separate rights, courts risk developing interpretations which favour either
copyright owners on the one hand, or users and service providers on the other.
These interpretations lack a nuanced consideration of whether an act of making
available or reproduction is volitionally exercised by each party. As a result, the
activities of copyright owners, users and cloud technology innovators are subject
to unclear, unpredictable and seemingly ad hoc rules.
Therefore, this article calls for an approach that aligns domestic law with the
policy perspectives articulated at the international level. It is an approach to the
making available right which does not take the actt of making available for granted.
In doing so, we need to understand what making available means and how it may
be exercised through the design of an automated system that makes copyright
material available to the public. This article is not an exhaustive account of all
possible systems or services that may carry these functions, but proposes the
questions that should be asked in determining whether the making available right
has been volitionally exercised:
1.
Who has designed the system?
2.
How is the content being made available? In other words, how is the act of
making available carried out?
3.
What is being made available? Is the system ‘content-neutral’ or does it
specifically accommodate copyright-protected content?
4.
Is it being made available to the public?
The right of a copyright owner to make their works available to the public is
embedded in our respective laws, whether expressly as part of the Australian
communication to the public right or given effect by the US public performance
right. As the cases illustrate however, the intermediate steps (questions 2 and 3)
are not given adequate attention. By ignoring what it means to ‘make available’,
the courts are foregoing an opportunity to decide these cases in a principled
manner.
As digital technologies and consumer services develop, courts are uniquely
positioned to respond to the tensions arising in copyright law. Given the
opportunity, Australian courts should recognise that the act of making available
warrants independent recognition, apart from acts of reproduction. The approach
that is open to US courts, on the other hand, is not as straightforward. In order
to give effect to the making available right in the US, courts have had to rely on
analogies with outdated technologies such as cable television services to mask an
Making Copyright Content Available in the Cloud vs the Making of Copies: Revisiting Optus
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617
artificial construction of the Transmit Clause. Without legislative implementation
of a making available right, it will become increasingly challenging for US courts
to provide a clear and principled interpretation of the Transmit Clause, and to
provide predictable legal rules for innovators and developers of cloud-based
technologies.196
196 Since the editing of this article for publication, the US Copyright Office has released its fi nal report
on the making available right: US Copyright Office, The Making Available Right in the United States:
A Report of the Register of Copyrights (23 February 2016) <http://copyright.gov/docs/making_
available/>. The Copyright Office expresses a view that the current exclusive rights in the statute
‘collectively meet and adequately provide the substance of the making available right’ (despite some
inconsistencies in lower court decisions) (at 4, 74) and hopes that its analysis will be useful to the
courts and other stakeholders (at 81). It notes that under the Aereo case ‘volition’ can extend to a
‘making available’ through the system, as opposed to requiring ‘volition’ for the individual selection
of works (at 47). Furthermore, the US Copyright Office makes a broader observation that bolsters the
need for clearer analysis of the act of making available. It finds that across the various jurisdictions
and models of implementation, there is still a great deal of uncertainty and inconsistency as courts
struggle to apply the right to new and emerging technologies (at 73).